A couple weeks ago the Federal Circuit issued a short opinion in Hantz Software, LLC v. Sage Intacct, Inc., No. 2022-1390, 2023 WL 2569956 (Fed. Cir. Mar. 20, 2023) that I suspect may have an outsized affect on 101 practice in Delaware.
The complaint in Hantz, alleged that the defendant infringed "one or more" claims of the asserted patents and attached claim charts for 8 particular claims. Defendant filed a 12(b)(6) motion on 101 grounds which the court granted, finding all of the claims of the asserted patents unpatentable. Plaintiff appealed the ruling to the extent it invalidated claims other than those specifically charted in the complaint.
The Federal Circuit vacated judgment on the other claims, stating:
[W]e agree that the operative complaint asserted infringement of only claims 1 and 31–33 of each asserted patent, and because Sage did not file any counterclaim of its own (instead, it simply moved to dismiss Hantz’s complaint), we conclude that the ineligibility judgment should apply to only claims 1 and 31–33 of the asserted patents.
Hantz, 2023 WL 2569956, at *1
The Federal Circuit took pains to note that Plaintiff took several steps to make clear that it was only asserting certain claims. In addition to specifically charting only claims 1 and 31-33, they also affirmed at a the hearing on the motion that “The only claims before the [dis-trict] court are the independent claims [i.e., claims 1 and 31–33] that are set forth in the [first] amended complaint." Id.
This naturally leads one to wonder if any of those extra facts mattered to the result. Fortunately, Judge Noreika issued an order in Buffalo Patents, LLC v. Spotify USA Inc., C.A. No. 22-1335-MN (D. Del. Apr. 10, 2023) (Order) this week that adds some clarity.
The plaintiff there alleged infringement of "at least claim _" of for each of the asserted patents without elaboration or attaching claim charts like the plaintiff in Hantz. The defendant moved to dismiss some of the patents on 101 grounds, devoting significant pages to showing certain claims were representative. Buffalo did not allege that these other claims were not at issue in its briefing, and there does not appear to have been any hearing on the motion where they might have made such statements.
Nevertheless, Judge Noreika held that it would be inappropriate to reach patentability of the claims not specifically referenced in the Complaint:
[I]n light of the Federal Circuit’s guidance and disposition in Hantz Software, the Court finds it inappropriate to address at the motion to dismiss stage the patent eligibility of all claims of the ’417 Patent, particularly where the operative pleading only asserts “at least Claim 38 of the ’417 Patent” and Defendant has not filed any counterclaims of invalidity that challenges the patent eligibility of all claims of the ’417 Patent.
Id. at 2.
A question that occurs to me is how rulings like the above affect cases going forward. I can imagine a motion to strike infringement contentions that assert claims other than the ones specifically mentioned in the complaint, and I wonder whether the result in cases like Hantz (where the plaintiff affirmatively stated that only certain claims were "before the district Court"), would be different from cases like Buffalo (where the plaintiff did not make such an argument). We'll have to wait and see.
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